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If you’re in the high-tech industry and are sued for copyright infringement, there are two words you need to remember (in addition to the phone number of your attorney, of course). Those two words are “fair use.”

This week, we were once again reminded of the increasing willingness of courts – and now juries – to “excuse” otherwise infringing conduct because the defendant’s use of the plaintiff’s copyrighted work resulted in the creation of new works or advances not contemplated by the plaintiff/copyright owner. In Oracle v. Google, a San Francisco jury found that Google’s unauthorized use of some 11,000 lines of Oracle’s copyrighted Java open-source code in Google’s Android mobile phone operating system was fair use.

Anyone familiar with copyright law knows that the fair use determination is fraught with ambiguity and uncertainty. The fair use determination is different from a finding of no infringement. Indeed, courts typically will not consider the issue of fair use unless the defendant’s conduct would otherwise be considered infringing. Unfortunately, neither Congress nor the courts have provided any clear guidelines or standards for deciding when the defendant’s use will qualify as fair use. Copyright scholars have long expressed frustration at trying to pin down the meaning of fair use – although perhaps none so eloquently as Professor Paul Goldstein of Stanford Law School:

Fair use is the great white whale of American copyright law. Enthralling, enigmatic, protean, it endlessly fascinates us even as it defeats our every attempt to subdue it.

The truth of Professor Goldstein’s observation is plainly evident in the Oracle court’s “Melville-esque” instructions to the jury about fair use. Indeed, of the court’s 22-page set of jury instructions, nine pages are devoted to explaining how the jury was to decide the fair use issue.

The district court’s jury instructions identified three sets of considerations that were to guide the jury’s deliberations. First, the jury was instructed that it must follow the guidance provided by Congress in Section 109 of the Copyright Act, which sets forth four factors to be considered in determining whether the defendant’s conduct constituted “the fair use of a copyrighted work.” What the district court failed to mention, however, is that there has been little or no judicial consensus as to what these factors actually mean and how they should be applied in particular circumstances. Indeed, David Nimmer concluded that based on his review of federal court fair use decisions, “had Congress legislated a dartboard rather than the particular four fair use factors embodied in the Copyright Act, it appears that the upshot would have been the same.”

Next, the jury was instructed that it needed to determine whether Google’s use was “transformative.” According to the district court, “a use is transformative if it adds something new, with a further purpose or different character, altering the first use with new expression, meaning or message rather than merely superseding the objects of the original creation.” Conversely, the jury was told that “a work is not transformative where the user makes little or no alteration to the expressive content or message of the original work and uses it in the same or similar context.” Finally, the jury was instructed that a defendant’s work may be considered transformative even where no modifications were made to the portions of the plaintiff’s work that were copied.

The district court explained that the jury’s determination of whether Google’s use was “transformative” was important because it would have a material impact on the way the jury considered the four factors identified by Congress in Section 109 of the Copyright Act. For example, the jury was told that with regard to the first factor – the purpose and character of the defendant’s use – the clearly commercial nature of Google’s use “weighs against fair use.” At the same time, the jury was instructed that “even a commercial use may be found . . . to be sufficiently transformative” under the first factor and “the more transformative an accused work, the more other factors, such as commercialism, will recede in importance.” Similarly, the district court instructed the jury that its evaluation of the fourth factor – the effect of the defendant’s use on the potential market for the copyrighted work – was also affected by whether Google’s use was considered “transformative.” On the one hand, the jury was told that Oracle need not “show with certainty that future harm will result so long as some meaningful likelihood of future harm exists to the market value of the copyrighted work or the licensing value of the copyrighted work and its derivative works in traditional, reasonable, or likely to be developed markets.” On the other hand, “where the second use is transformative . . ., market substitution is at least less certain and market harm may not be so readily inferred.” In short, “the greater the transformation, the more likely an accused use will qualify as a fair use.”

Finally, the jurors were told that even after considering each of the four factors through the lens of whether or not Google’s use was transformative, they were nonetheless free to consider whatever other factors they collectively thought were pertinent. The district court explained that while the Copyright Act states that the fair use determination “includes” consideration of the four factors, it does not preclude the consideration of other factors. Hence, the jury was told that “you may consider any additional circumstances and evidence, pro or con, that, in your judgment, bear upon the ultimate purpose of the Copyright Act, including protection of authors and the right of fair use, namely, to promote the progress of science and useful arts.”

Has copyright law come to this – where the outcome of copyright lawsuits worth hundreds of millions or perhaps billions of dollars are to be determined based on a lay jury’s ability to comprehend and apply legal terms and restrictions that both courts and copyright scholars have criticized as unworkable? Are lay juries really in the best position to determine whether the defendant’s use will or will not “promote the progress of science and useful arts”?

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